Supreme Court of Appeal laughs off T-Shirt manufacturer

LAUGH IT OFF PROMOTIONS CC v SOUTH AFRICAN BREWERIES INTERNATIONAL (FINANCE) B V T/A SABMARK INTERNATIONAL
Case No. 242/2003

In a matter where the respective sides could just as well have been "the right to freedom of expression" versus that of "statutory trade mark rights", the Supreme Court of Appeal recently gave judgement in a benchmark case, confirming a decision handed down by Judge Cleaver in the Cape of Good Hope Provincial Division of the High Court last year.

Laugh it Off Promotions CC ("Laugh it Off") is a company responsible for printing T-shirts featuring a mockery of the well-known trade mark used in relation to Carling Black Label beer. Laugh it Off replaced the words "BLACK LABEL" with "BLACK LABOUR" and "CARLING BEER" with "WHITE GUILT" in a similar design and colour combination as that of the Black Label product of South African Breweries ("SAB"). It, furthermore, replaced the words "AMERICA'S LUSTY LIVELY BEER" and "BREWED IN SOUTH AFRICA" on the original Black Label beer with the words "AFRICA'S LUSTY, LIVELY EXPLOITATION SINCE 1652" and "NO REGARD GIVEN WORLDWIDE".

SAB instituted legal proceedings against Laugh it Off on the basis of trade mark infringement. As opposed to the conventional trade mark infringement of using a trade mark that is identical or confusingly similar to that of a registered trade mark of another, the infringement that SAB alleged in this particular case was by way of the dilution of its trade mark rights through tarnishment. "Tarnishment" essentially meaning that Laugh it Off was through its conduct acting to the detriment of the reputation that vests in the trade mark of SAB and taking unfair advantage thereof for its own products and benefit.

In the light of the economic value of SAB's BLACK LABEL brand and in particular the reputation and advertising value or selling power thereof, the court weighed-up Laugh it Off's right to freedom of expression with SAB's right of property and freedom of trade. The court held that Laugh it Off's reliance on the fundamental right of freedom of expression was misplaced, and that its right of freedom of expression had in fact been abused.

The message on the T-shirt concerned was considered to be materially detrimental to the repute of the BLACK LABEL trade mark of SAB. The Court of Appeal held that it was not necessary for SAB to prove that it had suffered actual loss. It was sufficient that damage to the repute of the trade mark was likely to be caused.

T-shirts were held by the Court to be a powerful medium for making socio-political comments. In this regard, mention must be made of the fact that Courts are in general not amused by sex-and drug-related "parodies", even if they are clever or funny, simply because the prejudice to the trade mark concerned tends to outweigh freedom of expression. On the same principle, unfair or unjustified racial slurs on a trade mark owner (even if not hate speech or approximating it) should in general not be countenanced, more so in a society such as ours in South Africa.

In essence, Laugh It Off was using the reputation of SAB's well-known BLACK LABEL trade mark, which has been established at a considerable expense over a lengthy period of time, in the course of trade in relation to goods to the detriment of the repute of SAB 's trade mark without justification. Such use and detriment was unfair and accordingly constituted trade mark infringement.

Consequently, the Supreme Court of Appeal confirmed the order prohibiting Laugh It Off from making any further use of the trade marks of SAB. The Court also ordered Laugh It Off to pay the legal costs of SAB.